Wed, Oct 27, 2021 6:24 PM
By MARK GILLISPIE, Associated Press
CLEVELAND (AP) — A roller derby team that has called itself the Cleveland Guardians since 2013 sued the city's Major League Baseball team in federal court in Cleveland on Wednesday alleging that the switch from Indians to Guardians infringes on its trademark.
“A Major League club cannot simply take a smaller team's name and use it for itself,” the lawsuit said. “There cannot be two ‘Cleveland Guardians’ teams in Cleveland, and, to be blunt, Plaintiff was here first.”
The Cleveland Indians announced in July that it would assume the name Guardians for the 2022 season after years of criticism that the Indians name and Chief Wahoo logo were racist. The new name, the team has said, was influenced in part by the two large Art Deco statues that appear to stand guard on a bridge spanning the Cuyahoga River.
The all gender roller derby team is based in the Cleveland suburb of Parma. It formally registered the name Cleveland Guardians in 2017 with the Ohio secretary of state and has been selling team merchandise since 2014, the lawsuit said.
In a statement Wednesday, the Indians said, “We have been and continue to be confident in our position to become the Guardians. We believe there is no conflict between the parties and their ability to operate in their respective business areas.”
In April, the baseball team filed a trademark application for the Guardians name in the East African island nation of Mauritius, “effectively hiding the application unless one knew where to look,” the lawsuit said.
The baseball team contacted the roller derby team in June, telling team officials it was considering using the name Guardians, and asked the roller derby team to send a photo of its jersey, the lawsuit said.
When the roller derby team offered to sell the rights to the Guardians name to the baseball team, the Indians offered to pay a “nominal amount" that the roller derby team rejected, the lawsuit said.
The baseball team subsequently made another trademark filing in Mauritius for the team logo, the lawsuit said. The team also filed two federal trademark applications in July claiming exclusive rights to the Guardians name.
Negotiations between the two teams over rights to the name began after the baseball team's July announcement, and broke down on Tuesday, the lawsuit said.
The roller derby team wants the baseball team to advertise and promote that it would no longer call itself the Guardians with “at least as much effort and resources” used to promote the new name, the lawsuit said.
It also wants the baseball team to establish a fund equal to what the team spends on advertising and promotions if it continues using the Guardians name so the roller derby team can buy “corrective advertising.”
Mark Sommers, a Washington-based trademark attorney for the Finnegan law firm, said a judge would have to determine whether the Guardians name will cause confusion for fans who follow both the baseball and roller derby teams.
“If there's no intersect between the two brands, there's no likelihood of confusion,” Sommers said.
The lawsuit is likely to settle before it reaches trial, Sommers said.
“Money is a great influencer of resolving trademark cases,” he said. “The field of play, as it were, is best resolved through negotiation and resolution than a court of law.”
The Cleveland Indians' name change is scheduled to become official in the middle of November.